Advantages Making the Federal Court of Canada an Increasingly Desirable Forum for Intellectual Property Disputes

August 23, 2018
By Andrew McIntosh, Joshua Spicer and Adam Bobker

The vast majority of IP litigants in Canada already make the Federal Court their choice of forum.  This spring, the Canadian government pledged significant resources to advance a national intellectual property strategy aimed at further improving access to the best possible IP resources for businesses and innovators. Part of the strategy includes funding to appoint additional judges and streamline dispute resolution. While the full scope of the government’s initiative has yet to be announced, the new measures are expected to add to the Federal Court’s existing tools available to parties seeking timely and cost effective adjudication of their IP disputes. In the meantime, there are already a number of advantages to litigating IP disputes in the Federal Court in Canada:

  1. Expedited schedules and effective case management: In most cases the Court will set a schedule to get a case to trial within 2 years. By statute, pharmaceutical patent infringement actions brought under the PM(NOC) regulations must be heard and decided within 24 months.  When parties proceed by way of application on affidavit evidence only (and no discovery), early hearing dates are also available. Pre-trial proceedings are actively managed from an early stage by a case management judge (usually a “prothonotary”) assigned to the case and in some instances through early intervention of the trial judge.


  1. No collateral proceedings in the patent office: Issued Canadian patents are not subject to inter partes review in the patent office. Unlike in the US where defendants routinely institute IPR proceedings following the commencement of an infringement action, there is no equivalent in Canada. Actions in the Federal Court generally advance to trial without interruption.


  1. Proportionate, consultative discovery: The Court expects the parties to consult and provide proportionate discovery relevant to the issues in a case. The volume of documents produced and length of oral examinations is considerably less than typical in corresponding US litigation. Oral examination is limited to one representative per party and the inventor(s) in patent proceedings. There are no pre-trial expert depositions. The Federal Court’s practice guidelines provide for one day of examination per scheduled week of trial, and one hour of arising motions per day of discovery.


  1. Experienced judges: A single judge — not a jury — hears and decides all trials. Although there is no official roster of specialized judges hearing IP cases, an informal group has developed considerable expertise in all aspects of intellectual property. A number of judges have science or engineering backgrounds and practiced as IP litigation counsel.


  1. Canada-wide relief: Unlike the provincial superior courts, the Federal Court has national jurisdiction. It can hear disputes with a presence in multiple provinces and grant relief, including injunctions, which is binding and enforceable across the country. 


  1. Limited appellate review: Appellate review procedures are relatively straightforward and limited. An appeal lies as of right to the Federal Court of Appeal and is typically heard and decided within two years from the date of the trial decision. Leave is required to appear before the Supreme Court of Canada, and only granted in cases of national importance. 


  1. Court assisted mediation: As part of case management, the Federal Court offers formal mediation services, at no cost, and proactively explores ways of resolving the disputes that come before it.


  1. Principled damages and disgorgement of profits: Damages are based on general tort principles. Alternatively, statutory damages are also available for copyright infringement.  In patent cases, damages are assessed based on the patentee’s lost profits (including on convoyed sales) and a reasonable royalty on sales the patentee would not have made. Usually a plaintiff also has the option of seeking disgorgement of an infringer’s profits instead of damages. The profits remedy can provide significant relief to patent owners with limited market share, and can offer an important strategic advantage of shifting the burden to the infringer to prove its costs of the infringing sales.


Bereskin & Parr has extensive experience representing plaintiffs and defendants in the Federal Court and Federal Court of Appeal in all types of IP disputes. Our clients cover a wide range of industries such as chemical, pharmaceutical, biological, electronics, oil field services, military defence, and consumer products. Our lawyers are widely recognized as leaders in IP litigation, and routinely receive peer rankings and accolades from prominent services such as Benchmark, IAM Patent 1000, Lexpert, and others. We offer flexible and alternative, competitive fee arrangements.


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